Exclusive competence of the UPC – is it time to develop opt-out strategies?

The Agreement on a Unified Patent Court (UPCA), “the Court”, will enter into force four months after the 13th Contracting Member State has deposited its instrument of ratification. This date has been gradually moved forward from the beginning of January 2014. It is now anticipated for early 2017.
Immediately upon its entry into force of the Agreement, the Court will begin to settle disputes relating to European patents and European patents with unitary effect. A European patent is a patent granted under the provisions of the European Patent Convention (EPC) which does not benefit from unitary effect.

The UPCA thus automatically applies not only to the European patents with unitary effect, but also to all European patents which have not yet lapsed at the date of entry into force of the Agreement. The UPCA also applies to all European patents granted after that date, as well as to all European patent applications pending at that date or filed after it.

This means that even if you as a proprietor do not request unitary effect, your patent will still be within the exclusive competence of the new Court. Another important aspect worth considering is that the patents that have already been granted by the EPO will be also prosecuted before the new Court.

However, Articles 3 and 83 of the Agreement offer relief to proprietors and applicants which do not wish to have their European patents brought before the new Court. During a transitional period of seven years after the entry into force of the UPCA, an action for infringement or revocation of a European patent may still be brought before a national court or other competent national authority.

This must be requested, by opting out from the exclusive competence of the Court, by notifying the Registry and paying the prescribed fee (currently EUR 80). The proprietor or applicant may, of course, withdraw their opt-out at any time unless national court proceedings have begun.

The opt-out will only take effect upon entry into the register. Patent portfolios should therefore be reviewed during the second half of 2016 in order to be properly prepared before the Agreement enters into force and to be able to quickly file a request to opt out.

It is ultimately up to the proprietors and applicants to decide on the patents, applications and SPCs for which they want to opt out. However, bearing in mind that the UPC is a new court, without any case law to rely upon, it might be anticipated that opt-outs will be requested for important patents and applications for which unitary effect will not be sought, at least until the case law from the Court develops.

It is now also possible that there will be a ‘sunrise period’ during which patent holders may file the opt-out request with the Registry before the Court opens by the signing of the Protocol to the UPC Agreement on October 1st 2015.